Altria Client Services LLCDownload PDFPatent Trials and Appeals BoardMar 31, 20222021002173 (P.T.A.B. Mar. 31, 2022) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/686,431 04/14/2015 Edmond J. CADIEUX 24000-000163-US-01 7284 127542 7590 03/31/2022 Harness, Dickey & Pierce-Altria 11730 Plaza America Drive, Suite 600 Reston, VA 20190 EXAMINER WILL, KATHERINE A ART UNIT PAPER NUMBER 1747 NOTIFICATION DATE DELIVERY MODE 03/31/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dcmailroom@hdp.com gyacura@hdp.com jhill@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDMOND J. CADIEUX, MARTIN GARTHAFFNER, TRAVIS GARTHAFFNER, CHRISTOPHER R. NEWCOMB, BARRY S. SMITH, and JEFFREY A. SWEPSTON Appeal 2021-002173 Application 14/686,431 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and JENNIFER R. GUPTA, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-3, 5-21, 23, and 24. Appeal Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part, but because 1 This Decision includes citations to the following documents: Specification filed April 14, 2014 (“Spec.”); Final Office Action entered December 20, 2019 (“Final Act.”); Appeal Brief filed August 10, 2020 (“Appeal Br.”); Examiner’s Answer entered December 8, 2020 (“Ans.”); and Reply Brief filed February 8, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Altria Client Services LLC as the real party in interest. Appeal Br. 2. Appeal 2021-002173 Application 14/686,431 2 our rationale differs from the Examiner’s, we designate our affirmance as new grounds of rejection. CLAIMED SUBJECT MATTER Appellant states the invention relates to systems and methods of automated manufacture of vapor-generating articles. Spec. ¶ 2. Claim 1 is reproduced below and is illustrative of the claimed subject matter (Appeal Br. 16, Claims App.): 1. A method for automated manufacturing of e-vapor devices, comprising: organizing a feed of cartridge units of the e-vapor devices into a procession of cartridge units moving along an assembly path; supplying the cartridge units with a liquid while the cartridge units are moving on a first fluted transport section of the assembly path, wherein the supplying includes inserting a needle into each of the cartridge units, the needle being positioned adjacent to a periphery thereof prior to injecting the liquid; sealing the cartridge units with the liquid therein while the cartridge units are moving on a second fluted transport section of the assembly path; and inspecting the cartridge units before or after at least one of the organizing, supplying, and sealing and, based on results of the inspecting, ejecting non-compliant units from the procession of the cartridge units moving along the assembly path. Claim 11 is also independent and recites a system for automated manufacturing of e-vapor devices. Appeal Br. 17-18, Claims App. Appeal 2021-002173 Application 14/686,431 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bondanelli et al. (“Bondanelli”) US 5,116,298 May 26, 1992 Kraisuwannasarn US 2015/0272204 A1 Oct. 1, 2015 Lemay et al. (“Lemay”) US 2017/0006921 A1 Jan. 12, 2017 Kalus et al. (“Kalus”) CN 103491812 A (English Abstract of record) (as translated) Jan. 1, 2014 Ampolini et al. (“Ampolini”) WO 2015/123558 A2 Aug. 20, 2015 REJECTIONS 1. Claims 1-3, 5-7, 9-21, 23, and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Lemay, Kalus, Ampolini, and Kraisuwannasarn. Final Act. 2-10. 2. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Lemay, Kalus, Ampolini, Kraisuwannasarn, and Bondanelli. Final Act. 10; Ans. 13-14.3 3 Claim 8 depends from claim 1. The Final Action did not list Ampolini and Kraisuwannasarn in the statement of rejection, but in response to Appellant’s contention that the rejection was defective as a result of this omission (Appeal Br. 13), the Examiner clarified in the Answer that this omission was a typographical error and that the rejection included Ampolini and Kraisuwannasarn. Thus, we list Ampolini and Kraisuwannasarn in the statement of rejection of claim 8. Appeal 2021-002173 Application 14/686,431 4 OPINION We confine our discussion to claims 1, 21, and 24, which are representative of the separate arguments made by Appellant with respect to the rejections on appeal. 37 C.F.R. § 41.37(c)(1)(iv)(2019). Rejection 1 The Examiner’s Rejection In rejecting claim 1 as unpatentable over Lemay, Kalus, Ampolini, and Kraisuwannasarn, the Examiner found Lemay discloses a method for making electronic cigarette cartridges, the cartridges including a casing housing a shell for a retaining component that contains a flavor substance. Final Act. 2-3. The Examiner found Lemay discloses using fluted drums substantially as recited in claim 1, except for, inter alia, filling shells with flavoring substance while they are moving on a first fluted transport section of the assembly path. Id. at 3. The Examiner found that because Lemay does not disclose how the remainder of the assembly path is configured, it would have been obvious that the assembly path may comprise additional cooperating fluted drums for the remaining portions of the assembly path. Id. at 3 (citing Lemay Fig. 2; Kalus Abstr.). The Examiner found Lemay does not disclose a filling means including an inserting needle, which is positioned adjacent a periphery of the cartridge unit prior to injecting the liquid. Final Act. 3. The Examiner found Ampolini discloses that positioning the filling needle so that the aerosol precursor composition is directed down towards the internal surface of the outer body of the cartridge allows the reservoir to be filled at a faster rate. Id. at 4 (citing Ampolini Fig. 73, 69, l. 28 - 70, l. 29). The Examiner Appeal 2021-002173 Application 14/686,431 5 determined that one of ordinary skill in the art would have recognized that the filling means of Lemay may include a filling needle positioned adjacent to a periphery of the cartridge unit in order to fill at a faster rate as taught by Ampolini. Id. The Examiner found Kraisuwannasarn discloses a system and method of assessing the acceptability of product filter rods, where a filter rod is held in a fluted drum by suction or vacuum as it travels for further processing, and ejected by removing or reversing the vacuum if the rod is defective. Final Act. 4. The Examiner determined it would have been obvious to include ports with each flute of the fluted drums to secure cartridges and to accurately eject defective cartridges to reduce waste. Id. at 4-5. Appellant’s Arguments Appellant argues Ampolini requires tilting of the cartridge in order to fill at a faster rate, and that if applied to Lemay, the cartridge units would be dislodged from the fluted drum when tilted due to disruption of the suction or vacuum that holds the cartridge units within the flutes of the additional cooperating fluted drum. Appeal Br. 8-9. Appellant argues that tilting is directly linked to the composition being directed down the inner surface of the outer body, which leads to filling at a faster rate. Id. at 10-11. Appellant contends that Ampolini discloses a clamping mechanism to provide for tilting, which if incorporated into Lemay, would adversely affect the method and machine thereof. Id. at 11. Appeal 2021-002173 Application 14/686,431 6 Discussion We have considered Appellant’s arguments, and we agree with Appellant that Ampolini requires tilting in order to fill at a faster rate. Ampolini discloses: [A]s illustrated in FIGS. 72 and 73, the filling device 2510 may be configured to press against an inner surface of the outer body 216 when filling at each of the angular portions 2512a-d. Accordingly, the cartridge may tilt slightly and the aerosol precursor composition 2514 may be directed down the internal surface of the outer body 216, such that the reservoir substrate 214 may be filled at a relatively faster rate. Ampolini 70, ll. 25-29 (emphasis added). From this disclosure, it is clear that Figures 72 and 73 depict an arrangement where the cartridge may tilt slightly during filling, and as a result of the tilting, the aerosol precursor composition travels down the internal surface of the outer body, which leads to filling at a “relatively faster rate.” We are of the view that the “relatively faster rate” of filling refers to a rate that is faster relative to the increase in fill rate Ampolini discloses is achieved by employing filling at a plurality of angular portions of the cartridge. Id. at 69, l. 28 - 70, l. 8; Fig. 72. The Examiner states “Ampolini’s initial teaching of filling at a faster rate is directly related to the positioning of the filling device outlet adjacent to the internal surface of the outer body . . . not to tilting of the outer body.” Ans. 13 (citing Ampolini Fig. 72). We do not find the Examiner’s reliance on Figure 72, which Ampolini discloses is “an overhead view of a partially assembled cartridge during filling” (Ampolini 19, ll. 1-3) as providing sufficient support for the Examiner’s position. As discussed above, Ampolini expressly discloses that filling at a plurality of angular portions in combination with tilting the cartridge slightly allows the reservoir substrate Appeal 2021-002173 Application 14/686,431 7 to fill at a faster rate. Ampolini does not discuss that filling at a faster rate occurs simply by placing the filling device adjacent to the inner surface. Rather, when read in context, Ampolini discloses the “relatively faster rate” is achieved by a slight tilt of the cartridge due to the filling device being pressed against the inner surface of the outer body. Thus, we are of the position that the overhead view of the cartridge depicted in Figure 72 of Ampolini does not amount to a disclosure sufficient to support the Examiner’s findings. However, we are not persuaded by Appellant’s argument, unsupported by any objective evidence, that when incorporating the filling device of Ampolini including tilting of the cartridge in order to increase filling rate, the cartridge units would be dislodged from the fluted drums due to the centrifugal force of the rotating fluted drum. Appeal Br. 9. In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place of evidence in the record.”). In particular, Appellant does not provide any evidence that the “slight” tilting disclosed in Ampolini would be sufficient to disrupt the suction of the vacuum, or that one of ordinary skill in the art would have been unable to adjust the suction or the extent of the tilt to offset the force resulting from such “slight” tilting. Indeed, Ampolini makes clear that extent of the tilt may be small to achieve the “relatively faster rate” by disclosing that “the cartridge may tilt slightly.” Ampolini 70, ll. 25-29. In addition, even if Appellant is correct that tilting the cartridge as disclosed in Ampolini would disrupt the vacuum supplied to the fluted drums to hold the cartridge in place as in the combined teachings of Lemay and Kraisuwannasarn, that does not change our view that locating a filling Appeal 2021-002173 Application 14/686,431 8 needle adjacent to a periphery of the cartridge unit would have been obvious in view of Ampolini. That is, as discussed above, Ampolini discloses that the filling device, which is already located adjacent to the periphery of the outer body, is optionally (“may be configured”) to press against an inner surface of the outer body and that doing so allows the substrate to “be filled at a relatively faster rate.” Ampolini, p. 70, ll. 25-29; Fig. 2. Thus, one of ordinary skill in the art would have recognized that the filling device may be located adjacent to the periphery of the outer body without pressing against the inner surface of the outer body at the expense of the “relatively faster rate” of filling, especially in the situation where such pressing may cause a disruption in the vacuum that holds cartridges in position in the fluted drum. Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”) (alteration in original)). In this case, one of ordinary skill in the art would have had sufficient reason to have eliminated the optional pressing of the filling device against the inner surface in order to take advantage of the benefits of the vacuum/ejector assembly in Kraisuwannasarn of accurately ejecting defective cartridges in the combination proposed by the Examiner. See Final Act. 4-5. For similar reasons, we are not persuaded by Appellant’s argument that Ampolini discloses a particular clamping mechanism where tilting is permissible. Appeal Br. 11. Appeal 2021-002173 Application 14/686,431 9 Therefore, we modify the Examiner’s rationale to include the above discussion in rejecting claim 1 over the combination of Lemay, Kalus, Ampolini, and Kraisuwannasarn. Accordingly, we affirm the Examiner’s rejection of claim 1, independent claim 11, as well as the claims dependent therefrom, but because our rationale differs from the Examiner’s rationale, we designate our affirmance as a new ground of rejection. Claim 21 Claim 21 depends from claim 1, and further recites “wherein the supplying further includes moving the needle downward into each of the cartridge units after being positioned adjacent to a periphery thereof.” Appeal Br. 20. In rejecting claim 21, the Examiner determined that it would have been obvious to have positioned Ampolini’s filling needle “so that it is adjacent to a periphery of outer body 216 of the cartridge 200 before the needle is moved downwards into the outer body 216 of the cartridge 200.” Final Act. 10 (citing Ampolini 70, ll. 21-29) (reproduced above); see Ans. 13. Appellant contends that “moving the filling device 2510 downward will further the adverse effect to the method and machine of Lemay.” Appeal Br. 12 (underlining omitted). We are not persuaded by Appellant’s arguments for the reasons expressed above. Accordingly, we affirm the rejection of claim 21 for the reasons discussed above for claim 1. Appeal 2021-002173 Application 14/686,431 10 Claim 24 Claim 24 depends from claim 1, and further recites “wherein the needle is configured to move downward to a first filling position while adjacent to the periphery and configured to move upward to a second filling position while adjacent to the periphery.” Appeal Br. 20. In rejecting claim 24, the Examiner cited Ampolini, page 70, lines 21-29 (reproduced above), and determined that it would have been obvious to have positioned the filling needle of Ampolini “as the filling needle moves upwards to a second filling position.” Final Act. 10; see Ans. 13. Appellant contends Ampolini does not disclose moving a needle upward to a second filling position while adjacent to the periphery. Appeal Br. 13. We agree with Appellant. That is, we find no disclosure in Ampolini that the filling device is moved upward to a second filling position from a first filling position as recited in claim 24. Accordingly, we reverse the rejection of claim 24. Rejection 2 Appellant does not set forth any substantive arguments with respect to claim 8, and instead relies on the dependency of claim 8 from claim 1, stating only that Bondanelli fails to remedy the deficiencies discussed in connection with claim 1. Appeal Br. 14. Accordingly, we affirm the Examiner’s rejection of claim 8 and designate our affirmance as a new ground for similar reasons as discussed above for claim 1. Appeal 2021-002173 Application 14/686,431 11 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-3, 5-7, 9-21, 23, 24 103 Lemay, Kalus, Ampolini, Kraisuwannasarn 1-3, 5-7, 9-21, 23 24 1-3, 5- 7, 9-21, 23 8 103 Lemay, Kalus, Ampolini, Kraisuwannasarn, Bondanelli 8 8 Overall Outcome 1-3, 5- 21, 23 24 1-3, 5- 21, 23 TIME PERIOD FOR RESPONSE This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Appeal 2021-002173 Application 14/686,431 12 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019 (June 2020)). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation